The Black Hole of the Interference System

When an examiner forwards a form PTO-850 to the board recommending that an interference be declared, the examiner receives a credit — which counts towards satisfaction of his or her performance goals and which is redeemable for bonuses and promotions. Similarly, when an APJ declares an interference, the clock starts running—both for him or her and for the board. The pendency of interferences is calculated, but the length of pendency is calculated starting with the declaration of the interference, not with the forwarding of the form PTO-850. Inbetween the forwarding of the form PTO-850 and the declaration of the interference lies the black hole of the interference system. As far as I can tell, nobody tracks or cares about the length of this period1except the assignees of the prospective interferents and their counsel — and of course they don't work for the PTO.

Rumor has it that some of the APJs "nit pick" form PTO-850s and send them back to the responsible examiner for rework if they can find anything wrong with them.2 Of course, at that point the examiners have absolutely no incentive to spend any time on reworking their form PTO-850s.3 They have already gotten their "counters." Why should they care? They'll get around to reworking their form PTO-850s in their own sweet time. Moreover, the APJs have absolutely no incentive to check up on the examiners. If an examiner sends a correctly filled out form PTO- 850 back, the APJ will eventually have to declare the interference — thereby starting the clock running against him or her.

I try to reduce the APJs' opportunity to "nit pick" form PTO-850s in my cases by providing the examiners with form PTO-850s all filled out and ready for signature. However, this strategy only works (1) if an examiner uses my proposed form PTO-850 and (2) if I have filled out the form correctly. On the first point, some examiners use my proposed form (it saves them work) and other don't.4 On the second point, I think that I am filling out the form correctly — but I don't know. If the APJ to whom the prospective interference is assigned bounces the form back to the examiner, I don't see the APJ's criticisms of the form.

Obviously the attorney who filed the request for an interference can send in status requests — both to the examiner and to the board.5 I do that — at three months intervals. The status requests are initially polite, but they grow more and more heated over time. Usually my status requests are ignored — particularly at the examiner level. However, I hope that they will constitute evidence of diligence on the part of the party seeking the interference if that is ever somehow called into question. Moreover, I occasionally get a polite response from an examiner. One time an exceptionally diligent examiner even badgered the board (unsuccessfully) in an attempt to get an interference that I had requested declared. She seemed to take it as a personal affront that the board had not declared the interference that she had recommended! However, such diligence on the part of an examiner is the rare exception.

At the board level, I sometimes receive a polite response from one of the administrators.6However, more often than not, I receive no response—and when I do receive a response, the essence of the response is that the case is receiving an APJ's immediate attention (the administrators will not reveal the particular APJ to whom the case has been assigned) and that the APJ will decide whether or not to declare an interference and, if he or she decides to declare an interference, will do so in his or her own good time. Again, what I am doing is making a record, not getting results.

There is one exception to this sorry tale. If the parties to the prospective interference are involved in litigation (if, for instance, the owner of the patent which is the target of a 37 CFR 1.607 request has sued the owner of the targeting application for infringement of the target patent), and if the attorney who represents the owner of the targeting application can assure the administrator that the owner of the targeting application intends to file a motion for a stay of the litigation so that the validity and enforceability issues can be finally determined in the interference,7 the administrator can sometimes facilitate the rapid declaration of an interference. However, that situation obviously does not obtain in most cases.

If you (or one of your clients) is as angry about this situation as I am, make your voice heard! Write to Acting Commissioner Dickinson and Chief Administrative Patent Judge Stoner asking (1) that examiners not be given "counters" until an interference is actually declared,8 (2) that the period between the forwarding of form PTO-850s to the board and the declaration of interferences be tracked by the PTO,9 and (3) that the APJs to whom prospective interferences are assigned be held accountable for delays during that period.

Mr. Gholz acknowledges with thanks the contributions of his former partner Steven B. Kelber. Steve critiqued several drafts of this paper and provided several of the examples.

*Mr. Gholz is a senior partner in and head of the interference section of Oblon, Spivak, McClelland, Maier & Neustadt, P.C. in Arlington, Virginia. His E-mail address is [email protected]

ENDNOTES

1. 37 CFR 1.607(b) says that, "When an applicant seeks an interference with a patent, examination of the application, including any appeal to the Board, shall be conducted with special dispatch within the Patent and Trademark Office." However, this rule is apparently not construed as applying to the period between the forwarding of a form PTO-850 to the board and the declaration of an interference. Moreover, there is no comparable rule indicating that, when an applicant seeks an interference with another application, examination of the targeting application should be conducted with special dispatch.

2. Actually, this rumor emanates directly from some of the APJs — who level this charge (very informally) against some of their colleagues. Moreover, it is confirmed by personal interviews with examiners who have had form PTO-850s returned to them for various reasons — including (according to the examiners) (1) improper spelling of an inventor's name, (2) a request for a search for related files (when that search had been performed and the results of the search were shown in the form PTO-850, (3) "poor punctuation" (!!), and (4), most annoyingly, requests to "please redo" with no explanation of what was wrong with the first effort.

4. Some examiners have expressed reluctance to use my work product on the ground that, if they do, they might be charged with favoritism. I think that that fear is misplaced. Federal judges sign draft orders proposed by counsel for parties—including draft orders for ex parte seizures. Thus, the fact that the case is still ex parte when I submit the draft form PTO-850 is not controlling.

5. One problem for the attorney who filed the request for an interference is that is often difficult to ascertain where the file is — with the group, with the board, or lost in transit. The problem for the attorney who represents the assignee of the target patent is that a copy of the 37 CFR 1.607(d) notice is placed in the file of the patent (thereby placing an enormous cloud over the patent), but no further information is given to the patentee until either an interference is declared or a final determination is made that no interference will be declared. That period can last for years — during which the patent is severely devalued.

6. The administrators are senior examiners who handle various administrative matters for the board and the individual APJs.

7. See generally Gholz, Collateral Estoppel Effect of Decisions by the Board of Patent Interferences, 65 JPOS 67 (1983), and Gholz, The Decisions of the Board in an Interference Are Entitled to Issue-Preclusive Effect in a Parallel Patent Infringement Action but not Vice Versa, 6 Intellectual Property Today No. 8 at page 8 (1999).

8. If examiners were not given "counters" until an interference is actually declared, they would presumably have an incentive to promptly redo form PTO-850s that APJs returned to them for further work.

9. It would also be very interesting to know the percentage of form PTO-850s that do not result in the declaration of an interference. Rumor also has it that, ever since the PTO's internal procedures were changed so that examiners get a "counter" when they forward a form PTO-850 to the board, the board has been flooded with form PTO- 850s. After all, filling out a form PTO- 850 is probably the easiest way for an examiner to get a "counter," and the APJs bemoan the fact that, in most cases, the "counter" is not taken away from the examiner if the APJ to whom the case is assigned refuses to declare an interference.